converse v. fila.pdf

8/10/2019 Converse v. Fila.pdf

http://slidepdf.com/reader/full/converse-v-filapdf 1/23

Robert L. Powley (RP 7674)James M. Gibson (JG 9234)Stephen M. Ankrom (SA5375)

P o w l e y & Gibson, P.C.3 0 4 H u d s on St re e t - Suite 2 0 2

New York, NY 10013Telephone: (212) 226-5054Facsimile: (212) 226-5085

[email protected]@[email protected]

Christopher J. RenkEr ik S. M a u r e r

M ic ha e l J. Har r i s

Ka the r ine L a a t sc h F i n k

A u d ra C. E i d em H e in z e

Aaron P. BowlingB a n n e r & Wi t co ff , Ltd.10 S. Wacker Drive, Suite 3000Chicago, Illinois 60606Telephone: (312)463-5000Facsimile: (312)463-5001

Attorneys for Plaintiff,Co n v er se Inc.

/ ~ s

U N I T E D S T T E S D I ST R IC T C O U RTE S T E R N D I S T R I C T O F N E W Y O R K

B R O O K L Y N D I V I S I O N

TILED ~ ^ > . .

U£-DISTRICT r n T

CONVE RSE INC.,

Plaintiff, j 1 4 - 5 0 8 9»»..aH«

FILA U.S.A. , I NC . a ndFUJIAN X I N YA I E T RADI NG C O. LTD .,

D e f e n d a n t s

C O M P L I N T

Civil Act ion No.

Jury Trial Demanded



This case is about protecting Converse Inc.'s ( Converse s ) trademark rights in an

iconic shoe design. The shoe design at issue:

[was] ... the ultimateinsider shoefor the top athletesback in thefirst 50 years of its existence, and then it was the ultimate outsidershoe. But it s always been a mainstream shoe, too. It sort ofrepresents America

Whitney Matheson,Converse: 100 Years Young USA Today, Mar. 12, 2008, at 3D (quoting Hal

Peterson). Plaintiff Converse, for its complaint against Defendants FILAU.S.A., Inc. andFujian

Xinya I&E Trading Co.Ltd. (collectively, Defendants ), alleges as follows:

T h e P a r t i e s

1. Converse is a corporation organized and existing under the laws of the State of

Delaware with a principal place of business at OneHigh Street, North Andover, Massachusetts

01845. Foundedin Massachusetts as the Converse Rubber Shoe Company in 1908, Converse is

a leading producer of footwear, apparel, and accessories. Converse footwearappears in rock

clubs, onthe streets, on rappers, icons,celebrities, athletes, rebels, and originals.

2. On October 14, 2014, Converse also requested that the United States International

Trade Commission ( ITC ) institute an investigation against Defendants under Section 337 of

the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 ( Section 337'), based on the unlawful

importation into the United States, sale for importation into the United States, or sale within the

United States after importation, of certain footwear products that violate Converse's rights in a

registered and common la w trademark used in connection with certain Converse shoes.

Converse shoes bearing the trademark asserted in this matter are referred to as Converse

S h o es .



3. On information and belief, Defendant FILA U.S.A., Inc. ( FILA ), is a Maryland

corporation with its principal place of business located at 930 Ridgebrook Road Suite 200,

Sparks, MD 21152. On information and belief, FILA is a subsidiary of FILA Korea, Ltd.,

located at 6 Myeongdal-Ro, Seocho-Gu, 137868 Seoul, SouthKorea.

4. On information and belief, Defendant Fujian Xinya I&E Trading Co. Ltd.

( Xinya ) is a Chinese product manufacturer with an address at Floor 4, Building A, China

Shoes Capital, ChendaiTown, Jinjiang, 362200Fujian Province, China.

5. On information and belief, Xinya manufactures and distributes products to FILA.Ju r i sd i c t i o n a n d Ve n u e

6. This is an action for trademark infringement, false designation of origin, unfair

competition, trademark dilution, and unfair business practices. This action arises under the

Trademark Act of 1946, 15 U.S.C. § 1051, et seq. ( Lanham Act ), Ne w York General Business

Law §§ 133, 349, 360, and the commonlaw of the State of New York.

7. This Court has subject matter jurisdiction over this action pursuant to at least 15

U.S.C. § 1121(a) and 28 U.S.C. §§ 1331,1338(a) & (b), and 1367(a).

8. On information and belief, this Court may exercise personal jurisdiction over

Defendants based upon their contacts with this forum, including being domiciled in this forum,

regularly and intentionally doing business here, and/or committing acts giving riseto this lawsuit

here. Alternatively, on information and belief, this Court may exercise personal jurisdiction over

Defendants under Federal Rule of Civil Procedure 4(k)(2).

9. Venue is proper in this judicial district pursuant to at least 28 U.S.C. §§ 1391(b)

and (c).



G e n e r a l A l le g a ti o n s - C o n v er s e 's A s s e rt e d Tr a d e m a r k

10. Converse owns rights in the appearance of the midsole design used in connection

with Converse Shoes. Converse owns common law and federal trademark rights in the

distinctive midsole design made up of a toe bumper and a toe cap, plus either an upper stripe

and/or a lower stripe, including U.S. Trademark Registration No. 4,398,753 (the Asserted

Trademark ). A certified copy of the U.S. Trademark Registration Certificate for the Asserted

Trademark is attached as Exhibit 1. Exemplary images of the Asserted Trademark are shown in

I l lus t ra t ion 1 below.

Illustration 1: Examples of Ihe Asserted Trademark



11. Converse first introduced a distinctive combination of design elements closely

resembling the Asserted Trademark on All Star high-top sneakers in 1917. By 1932, the

Asserted Trademark acquiredits present-day appearance. In 1934, Converse Shoesbearing the

design were eponymously renamed Chuck Taylor after a Converse salesman and basketball

player. In 1957, Converse introduced a low top, or oxford, version of shoes bearing the

Asserted Trademark. Converse has also used the Asserted Trademark in connection with other

footwear products, including but not limited to, One Star and Star Player shoe models.

Consumers often refer to shoes bearing the Asserted Trademarkas All Stars, Chuck Taylors,

Chucks, or Chuck sneakers. All told, Converse has continuously manufactured, promoted,

and sold shoes bearing the Asserted Trademark for more than 80years.

12. Since their introduction around 1917, Converse has sold approximately one

billion pairs of shoes bearing the Asserted Trademarkworldwide. Converse has spent hundreds

of millions of dollars advertising and promoting shoes bearing the Asserted Trademark.

Converse s advertisementsand promotions ofthe Asserted Trademark have appearedin print, on

the Internet, on billboards, in videos, andat retail. Overthepast two fiscal years alone, Converse

has spent approximately 30 million advertising and promoting the Asserted Trademark in the

United States. The Asserted Trademark is also the subject of widespread and unsolicited public

attention. Thispublicity extends from acclaim in books, magazines, and newspapers to frequent

appearances in movies and television shows. Over the last century, celebrities, professional

athletes, and other prominent figures have been publicized wearing Converse Shoes bearing the

A s s e r te d Tr a d em a r k .

5



13. Converse has served approximately 120 cease-and-desist letters at trade shows,

and served additional letters and filed federal district court lawsuits, to protect consumer

perceptions and to police the Asserted Trademark.

14. Defendants in federal district court lawsuits have entered into consent judgments

admitting that the trademarks at issue in those lawsuits, including the Asserted Trademark, are

distinctive and non-functional, well known, famous andassociated with Converse, andthat

the goodwill appurtenantthereto belongsexclusively to Converse.

15. Likewise, violators to whom Converse sent cease-and-desist letters entered intosettlement agreements in which violators admit that the midsole design of the Asserted

Trademark is well known, famous, and associated with Converse; non-functional; and valid and

enforceab le .

16. As a result of more than 80 years of exclusive use of the Asserted Trademark;

ubiquitous advertising, sales, and distribution of shoes bearing the Asserted Trademark; the

intentional copying and recognition of Converse's rights by others; and because of the vast

unsolicited and salutary publicity of the Asserted Trademark in connection with Converse, the

Asserted Trademark enjoys substantial secondary meaning as a trademark connected with

Converse and is, and was at all relevant times, famous among the general consuming public of

t h e U n it ed States a nd in N ew York.

General Allegations - Defendan ts ' Unau thor ized Activ it i es

17. On information and belief, Defendants sell, offer to sell, distribute, promote,

and/or advertise footwear products bearing confusingly similar imitations of the Asserted

Trademark (the Accused Products ) that are likely to cause consumer confusion with and

di lu t ion o f th e f amo u s Asse r t ed Trademark .

6




and/or advertise Accused Products in competition with Converse.

19. On information an d belief, Defendants Accused Products travel in similar

channels of trade and are sold to similar consumers as Converse Shoes bearing the Asserted

Trademark.


and/or advertise the Accused Products in several styles, including at least their Original

Canvas footwear products. Illustration 2 below compares the AssertedTrademark to an image

of a representative Accused Product.

Illustration 2: Exemplary Images of th e Asserted Trademark left). Evcmplary Image ofDefendants Accused Products right)

Original Canvas

21. Converse owned valid rights in the Asserted Trademark, and the Asserted

Trademark was famous in connection with Converse, before Defendants began selling, offering

to sell, distributing, promoting, or advertising the Accused Products.

7



22 . Co n v er se h as never author ized Defendants to us e t he Asser t ed Trademark.

23. On information and belief, Defendants knew of th e Asserted Trademark before

they began selling, offering to sell, distributing, promoting, and/or advertising the Accused

Products .

24. On information and belief - an d as evidenced by the facts and circumstances

alleged above - Defendants have intentionally and willfullyviolatedthe Asserted Trademark.

Count I: Trademark Infringement under Section 32 1) of th e Lanham Act(1 5 U. S . C . S 1114(1) )

25. Conversere-alleges each and every allegationset forth in paragraphs 1 through24

above, inclusive, and incorporates them by reference herein.

26. Defendants' offers to sell, sales, distribution, promotion, and/or advertisement of

Accused Products violates Section 32(1) of the Lanham Act, 15U.S.C. § 1114(1).

27. Converse owns duly issued and validly subsisting rights in U.S. Trademark

Registration No. 4,398,753 covering the Asserted Trademark. The Asserted Trademark has a

distinctive overall appearance that is non-functional, and has also acquired substantial secondary

meaning in the marketplace through Converse's extensive and continuous use, advertising,

promotion, and salesof products bearingthe AssertedTrademark for many decades in the United

States. Through that extensive and continuous use, advertising, promotion, and sales, the

Asserted Trademark became a well-known indicator of the origin and/or quality of Converse

footwear before Defendants unauthorized us e o f th e Asserted Trademark.

28 . Defendants use o f t h e A s se rt ed Tr ad e ma rk and/or colorable imitat ions thereof is

likely to cause consumer confusion as to the origin, sponsorship, or approval of the Accused

Products, at least by creating the false and misleading impression that the Accused Products are

manufactured by, authorized by, or otherwise associated with Converse.



29 . Defendants us e o f the Asserted Trademark and/or colorable imitations thereof

has caused, and unless enjoined, will continue to cause substantial and irreparable injury to

Converse for which Converse has no adequate remedy at law, including at least substantial and

irreparable injury to the goodwill and reputation for quality associated with the Asserted

Trademark.

30. On information an d belief, Defendants' use of th e Asserted Trademark and/or

colorable imitations thereof has been intentional and willful as is evidenced at least by the near

identical similarity of the Accused Products to the Asserted Trademark, as demonstrated in

Illustration 2 above, and by Defendants' knowledge of the Asserted Trademark before they

began selling, offering to sell, distributing, promoting, and/or advertising the Accused Products.

31. As a result of Defendants' conduct, Converse is entitled to injunctive relief, and

Converse is also entitled to recover Defendants' profits, Converse's non-duplicative actual

damages, enhanced profits and damages, costs, and reasonable attorney fees under 15 U.S.C.

§§1114,1116, and 1117.

Count II: False Designation of Origin/Unfair Competition under Section 43 a) of theL a n h a m c t 15 U. S . C . § 1125(a)

32. Converse re-alleges each and every allegationset forth in paragraphs 1 through 31


33. Defendants' offers to sell, sales, distribution, promotion, and/or advertisement of

Accused Products, in competition with Converse, violates Section 43(a) of the Lanham Act, 15

U.S.C. § 1125(a).

34. The Asserted Trademark is federally registered under U.S. Trademark

Registration No.4,398,753, andis entitled to protection underboth federal lawand common law.

The Asserted Trademark has a distinctive overall appearance that is non-functional, and has also

9



acquired substantial secondary meaning in the marketplace through Converse's extensive and

continuous use, advertising, promotion, and sales of products bearing the Asserted Trademark

for many decades in the United States. Through that extensive and continuous use, advertising,

promotion, and sales, the Asserted Trademark became a well-known indicator of the origin

and/or quality of Converse footwear before Defendants' unauthorized use of the Asserted

Trademark.

35. Defendants us e of th e Asserted Trademark and/or colorable imitations thereof

constitutes a false designation of origin and/or unfair competition that is likely to cause consumer

confusion, mistake, or deception as to the origin, sponsorship, or approval of the Accused

Products by creating the false and misleading impression that the Accused Products are

manufactured by, authorized by, or otherwise associated with Converse.

36. Defendants us e o f th e Asserted Trademark and/or colorable imitations thereof




Tra de ma rk .

37. On information and belief, Defendants' use of th e Asserted Trademark and/or




began selling, offering to sell, distributing,promoting, and/or advertising the Accused Products.



1



damages, enhanced profits and damages, costs, and reasonable attorney fees under 15 U.S.C. §§

1125(a), 1116, and 1117.

C o u n t IEL Dilut ion u n d e r Sect ion 43(c) o f t he L a nh am A c t 15 U.S.C. § 1125(c)

39. Converse re-alleges eachand every allegation set forth in paragraphs 1 through 38


40. Defendant s' offers to sell, sales, distribution, and/or advertisement of Accused

Products violates Section 43(c) of the Lanham Act, 15U.S.C. § 1125(c).

41. The Asserted Trademark is federally registered under U.S. Trademark

Registration No. 4,398,753, and is entitled to protection under both federal law and common law.

The Asserted Trademark has a distinctive overall appearance that is non-functional, and has also

acquired substantial secondary meaning in the marketplace through Converse's extensive and

continuous use, advertising, promotion, and sales of products bearing the Asserted Trademark

for many decades in the United States. Through that extensive and continuous use, advertising,

promotion, and sales, the Asserted Trademarkbecame a famous and well-knownindicatorof the

origin and/or quality of Converse footwear before Defendants' unauthorized use of the Asserted

Trademark .

42 . Defendants use o f t he Asser t ed Trademark and/o r colorabl e imit at i ons thereof is

likely to dilute the famous Asserted Trademark at least by eroding the public's identificationof

the famous Asserted Trademark with Converse and by lessening the capacity of the famous

Asserted Trademark to identify and distinguish Converse products.

43. Defendants use of the Asserted Trademark and /or colorable imitations thereof



1 1




Trademark, and an erosionof the distinctiveness of the Asserted Trademark

44. On information and belief, Defendants' use of the Asserted Trademark and/or




began selling, offeringto sell, distributing, promoting, and/or advertisingthe AccusedProducts.

45. Converse is entitled to injunctive relief, and Converse is also entitled to recover

Defendants' profits, Converse's non-duplicative actual damages, enhancedprofits and damages,

costs, andreasonable attorney fees under 15 U.S.C. §§ 1125(c), 1116, and 1117.

Count IV: C om m on L aw Trademark Infr ingement and Unfa ir Compe t it ion

46. Conversere-allegeseach and every allegationset forth in paragraphs 1 through45


47. Defendants' offers to sell, sales, distribution, promotion, or advertisement of

Accused Products, in competition with Converse, constitutes common law trademark

infringement and unfair competition.

48. The Asserted Trademark is entitled to protection under the common law of the

State of New York. The Asserted Trademark has a distinctive appearance that is non-functional,

and has also acquired substantial secondary meaning in the marketplace through Converse s

extensive and continuous use, advertising, promotion, and sales of products bearing the Asserted

Trademark for many decades in the United States. Through that extensive and continuous use,

advertising, promotion, and sales, the Asserted Trademark becamea well-known indicator of the

origin and/or quality of Converse footwearbefore Defendants unauthorized use of the Asserted

Trademark.

1 2



49. Defendants' use of the Asserted Trademark and/or colorable imitations thereof is

likely to cause consumer confusionas to the origin or sponsorship ofthe Accused Products by

creating the false and misleading impression that the Accused Products are manufactured by,

authorized by, or otherwise associated with Converse.

50. Defendants' use of th e Asserted Trademark and/or colorable imitations thereof



irreparable injury to the goodwill and reputation for quality associated with the AssertedTrademark.





began selling,offering to sell, distributing, promoting,and/or advertisingthe Accused Products.



damages, punitive damages, costs, and reasonable attorney fees.

Count V: Unlawful Deceptive Acts and Practices under New York General BusinessL a w § 34 9



54. Defendants' offers to sell, sales, distribution, promotion, or advertisement of

Accused Products, in competition with Converse, violates section 349 of New York General

B u s i ne s s L a w.

13



55. The Asserted Trademark is entitled to protection under New York law. The

Asserted Trademark has a distinctive appearance that is non-functional, and has also acquired

substantial secondary meaning in the marketplace through Converse's extensive and continuous

use, advertising, promotion, and sales of products bearing the Asserted Trademark for many

decades in the United States. Through that extensive and continuous use, advertising,


and/or quality of Converse footwear before Defendants' unauthorized use of the Asserted

Trademark.

56. Defendants use o f th e Asser t ed Trademark and/or colorable imitations thereof

constitutes a deceptive act and/or practice in the conductof Defendants' business, trade, and/or

commerce, and a false designation of origin and/or unfair competition that is likely to cause

consumer confusion, mistake, or deception as to the origin, sponsorship, or approval of the

Accused Products by creating the false and misleading impression that the Accused Products are

manufactured by, authorizedby, or otherwiseassociatedwith Converse.

57. Defendants us e o f th e Asserted Trademark and /or co lo rab l e imit at ions thereof




Tra de ma rk .

58. On information and belief, Defendants' use of th e Asserted Trademark and/or



1 4




began selling,offering to sell, distributing, promoting, and/or advertisingthe AccusedProducts.


Converse is also entitled to recover actual damages, enhanced damages, punitive damages, and

reasonable attorney's fees.

Co un t VI : Trademark Infringement under New York General Business Law § 133

60. Conversere-alleges each and every allegation set forth in paragraphs 1 through 59

above, inclusive, and incorporates themby reference herein.61. Defendants' offers to sell, sales, distribution, promotion, or advertisement of

Accused Products, in competition with Converse, violates section 133 of New York General

B u s in e s s L a w.



substantial secondary meaningin the marketplace through Converse s extensive and continuous

use, advertising, promotion,and sales of products bearing the Asserted Trademark formany



and/or quality of Converse footwear before Defendants unauthorized use of the Asserted

Trademark.

63. Defendants' use of the Asserted Trademark and/or colorable imitations thereof

constitutes a false designationof origin and/or unfair competitionthatis likely to cause consumer

confusion, mistake, or deception as to the origin, sponsorship, or approval of the Accused

Products by creating the false and misleading impression that the Accused Products are

manufacturedby, authorizedby,or otherwise associatedwith Converse.

1 5



64. Defendants' use of the Asserted Trademark and/or colorable imitations thereof




Trademark.


colorable imitations thereof has been intentional, willful, and with the intent to deceive and/or

mislead the public as is evidenced at least by the near identical similarity of the AccusedProducts to the Asserted Trademark, as demonstrated in Illustration 2 above, and by Defendants'

knowledge of the Asserted Trademark beforethey began selling, offering to sell, distributing,

promoting, and/or advertising the Accused Products.

66. As a result of Defendants' conduct, Converse is entitled to injunctive relief

enjoiningDefendants conduct described above.

Count VII: Dilution under N ew York General Business Law § 360-L


above, inclusive,and incorporates them by referenceherein.

68. Defendants' offers to sell, sales, distribution, or advertisement of Accused

Products violates section 360-L of New York General Business Law.



substantial secondary meaning in the marketplace throughConverse s extensive and continuous

use, advertising, promotion,and sales of products bearing the Asserted Trademark for many


1 6



promotion, and sales, the Asserted Trademarkbecame a famous and well-known indicator of the

origin and quality of Converse footwearbefore Defendants unauthorized use of the Asserted

Trademark.

70. Defendants' us e of th e Asserted Trademark and/or colorable imitations thereof on

the Accused Products that are substantially similar to the Asserted Trademark is Ukely to dilute

the famous Asserted Trademark at least by eroding the public's identification of the famous

Asserted Trademark with Converse and by lessening the capacity of the famous Asserted

Trademark to identify and distinguish Converse footwear products.

71. Defendants us e of th e Asser ted Trademark and/or colorab le imitations thereof




Trademark.


colorable imitations thereof has been intentional and willful as is evidenced at least by the

substantial and near identical similarity of the Accused Products to the Asserted Trademark, as

demonstrated in Illustration 2 above, and by Defendants' knowledge of the Asserted Trademark

before they began selling, offering to sell, distributing, promoting, and/or advertising the

A ccu sed Products.

73. As a result of Defendants ' conduct, Converse is entitled to injunctive rel ief

enjoining Defendants conductdescribed above.

J u r y D e m a n d

Converse demands a trial by jury.

1 7



R e l i e f S o u g h t

WHEREFORE, Converse respectfully prays for:

A. Judgment that Defendants have (i) willfully infringed the Asserted Trademark in

violation of § 1114of Title 15 in the United States Code; (ii)willfully used false designations of

origin and/or engaged in unfair competition in violation of § 1125(a) of Title 15 in the United

States Code; (iii) willfully dilutedthe Asserted Trademarkin violation of § 1125(c) ofTitle 15 in

the United States Code; (iv) willfully infringed the Asserted Trademark and engaged in unfair

competitionin violation ofthe common lawofNew York; (v) willfully committed deceptiveacts

in violation of Section 349oftheNewYork General Business Law, (vi) willfully committed acts

wit h the in tent to deceive or mislead in violation of Section 133 of th e Ne w York General

Business Law, and (vii) willfully diluted the Asserted Trademark in violation of Section 360 of

th e N ew Yo rk General Business Law.

B. An injunction prohibiting Defendantsand each of their agents, employees,

servants, attorneys, successors and assigns, and all others in privity or acting in concerttherewith

from continuing infringement, false designation of origin, unfair competition, and dilutionof the

Asserted Trademark, includingat least from selling, offering to sell, distributing,or advertising

the Accused Products, or any other products that use a copy, reproduction, and/or colorable

imitation of th e Asserted Trademark;

C. An order directing the destruction of all Accused Products, or any otherproducts

that use a copy, reproduction, and/or colorable imitation of the Asserted Trademark, in

Defendants' possession or control, and the destruction of all advertising materials related to the

Accused Products in Defendants' possession or control, including on the Internet;

D. An award of Defendants' non-duplicative profits, Converse's actual damages,

enhanced profits and damages, punitive damages, costs, and reasonable attorney fees for

1 8



Defendantsttademarkinfringementsanddtlution,m actso unfaircompetitionandunfa

business practices;and

E. Suchotherandfurtherreliefas thisCourtdeemsjustandproper.

Respectfully submitted,

Dated:October14 2014 R^rOH^wkyW 7674JamesM. Gibson(JG 9234)StephenM. Ankrom (SA5375)Powley & Gibson, P.C.304 Hudson Street - Suite 202New York, NY 10013Telephone: (212) 226-5054Facsimile: (212) 226-5085

[email protected]@[email protected]

ChristopherJ. RenkErik S. Maurer

Michael J. HarrisKatherine Laatsch FinkAudra C. Eidem HeinzeAaron P. BowlingBanner & Witcoff, Ltd.10S. Wacker Drive, Suite 3000Chicago, Illinois 60606Telephone: (312) 463-5000Facsimile: (312) 463-5001

[email protected]@[email protected]@[email protected]@bannerwitcoff.com

Attorneysfor Plaintiff Converse Inc

1 9



Exh ib i t 1



^ ^ s m t ^ ^ s a ^ m w i q ^ B d c

UNITED STATES DEPARTMENT OF COMMERCE

United States Pa ten t and Trademark Office

September 24,2013

THE ATTACHED U.S. TRADEMARK REGISTRATION 4 398 753 ISCERTIFIEDTO BEA TRUE COPY OF THE REGISTRATION ISSUED BYTHE UNITED STATES PATENT AND TRADEMARKOFFICE WHICHREGISTRATION IS IN FULL FORCE AND EFFECT.

REGISTERED FORATERM OF 10 YEARS FROM September 10 2013SAID RECORDS SHOW TITLE TO BE IN: Registrant

By Authority of theUnder Secretary of Commercefor IntellectualPropertyand Director of the United States Patent an d Trademark Office

T . L AW RE NC E

Certifying Officer

V>C^



m ^ lta tes of &

Wmti &tate* patent mto {fcratoettrarfcOffae ei

Reg. No. 4,398,753

I i i t C L : 2 5

T R A D E M A R K

P R IN C IPA L REGI STER

CONVERSEINC. (DELAWARECORPORATION)O N E H I G H STREET

Registered Sep. 10,2013 northandover,maoismFOR;FOOTWEAR,IN CLASS25 US. CLS.22 AND 39).

FIRSTUSE 0-0-1946;IN COMMERCE 0-0-1946.

OWNER OF IIS. REG. NOS. 4,052,112AND 4,065,482.

THE MARK CONSISTS OFTHE DESIGN OFTHE TWO STRIPES ON THE MIDSOLE OFTHE SHOE,THE DESIGNOF THE TOE CAP, THE DESIGN OF THEMOLTI-LAYEREDTOEBUMPERFEATURING DIAMONDSANDLINEPATTERNS,ANDTHERELATIVEPOSITIONOFTHESEELEMENTSTOEACH OTHER, THE BROKENLINES SHOW THEPOSITIONOFTHEMARK AND ARE NOT CLAIMEDAS PARTOF THE MARK.

SEC. 2(F).

SER. NO . 85-696,598, FILED 8-6-201Z

KTMBERLYFR.YE,EXAMININGATTORNEY

AeSBCDfcracttroffiletWte* States Fsfcetf u IMaDMk Office



REQUIREMENTS TO MAINTAIN YOURFEDERALT R A D E M A R K R E G I S T R AT I O N

WARNING: YOURREGISTRATIONWILL BE CANCELLED IF YOUDO NOTFILE THEDOCUMENTSBELOW DURINGTHE SPECIFIED TIME PERTODS.

Requirementsin the First Ten Years*W h a t an d W h e n to Fi le :

First Filing Deadline: Yon must file aDeclarationofUse (orExcusable Nonuse)betweenthe5thand6thyearsaftertheregistrationdate. See 15 U.S.C. §§1058,1141k. Ifthe declarationisaccepted,theregistiationwill continue inforce forthe remainderoftheten-yearperiod, calculatedfrom the registrationdate, unless cancelledby anorderofthe Commissionerfor Trademarksorafedera l c o u r t

Second Filing Deadline: You mustfilea DeclarationofUse (orExcusableNonuse)andanApplicationforRenewalbetween the 9thand10thyears after the registrationdate*See 15 U.S.C. §1059.

Requirements in SuccessiveTen-Year Periods*W h a t a n d W h e n t o File:

Yon rrmstfiteaL>eclarationofUse(orExcusableNonuse) and anAr^dicationforRenewalbetweenevery 9thand lOrh-yearperiod, caknriatedfromtberegistrationdate.*

Grace Period Filings*

The above documents willbe acceptedas timely if fUedwilbmsixnratitfcaftCTwiththe paymentofan additionalfee.

The United StatesPatentand Trademark Office (USPTO)wffl NOT send you anyfuture notice orreminder of these filing requirements.

*ATTENTIONMADRIDPROTOCOLREGISTRANTS: The holderofan internationalregistrationwithan extensionofprotection to the United Statesunder theMadridProtocolmust timelyfile theDeclarationsofUse (or ExcusableNonuse) referencedabovedirectly with the USPTO. The time periods for filingarebased on the U.S. registration date(notthe internationalregistrationdate). The deadlinesandgrace periodsfor the DeclarationsofUse (or ExcusableNonuse) are identicalto those for nationally issued registrations.See 15U.S.C.§§1058,1141k. However ownersofinternationalregistrationsdonotfile renewalapplicationsat the USPTO. Instead, the holder must file a renewal of the underlying internatiorial registrationat theInterrorronalBureanoftheWorld Inteflecta^ 7oftie Madrid Protocol,before the eviration of each ten-year term of protection, calculatedfrom the date of the international

registration.See 15U.S.C.§1141}.FormoreinformationandrenewalformsfortheinterrmtioTKiJregistrationsee http^A^Tvw.wrpo.int/roadiid/en/.

NOTE: Feesand requirementsformaintainingregistrations are subjecttochange. Pleasecheck tineUSPTOwebsiteforfurther informatioii. Withthe exception of renewal applicationsfor registeredextensionsofprotection,you canfile the registrationmaintenance documents referencedaboveonlinea t http://www.uspto.gov.

Page: 2 / R N 4,398,753

converse v. fila.pdf

Documents